Trademark 101: Next Steps After You Have Registered

Congratulations! You’ve finally received notice that your trademark registration application has been approved by the United States Patent and Trademark Office (USPTO). So what’s next? In the following article, we’ll discuss what steps you need to take now that your trademark has officially been registered.

Add The Trademark Registration Symbol

One of the first steps you can take after your mark has been registered is to add the registered trademark symbol to your name, logo or slogan. According to the USPTO, “the “®” symbol indicates that you have federally registered your trademark with the United States Patent and Trademark Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it.” There are three important restrictions you need to know when it comes to using the “®” symbol, according to the USPTO:

1. It may only be used after the mark is registered (you may not use it during the application process

2. It may only be used on or in connection with the goods and services listed in the federal registration.

3. It may only be used while the registration is still active (you may not continue to use it if you don’t maintain the registration or it expires).

Create Awareness

Another step you should take once your mark has been registered with the USPTO is to start creating awareness about the fact that your mark now has protection. There are a number of strategies you can implement in order to raise awareness about your trademark. Examples include:

Sharing the news on social media sites like Facebook and Twitter.

Writing a blog post and press release announcing the news.

Recording and publishing a YouTube video to inform people about your newly registered trademark.

Sending out an email to your subscribers with messaging that highlights the news.

Including your news in your quarterly or annual newsletter.

Creating awareness about your trademark is a good way to help others understand what your rights are as the owner of the trademark, and can also help prevent any unintentional cases of infringement.

Monitor

As mentioned in previous blog posts, it’s extremely important that you take time to monitor for cases of infringement once you have registered your trademark. You must be proactive when it comes to monitoring for potential infringement and enforcing your rights as a trademark owner. The USPTO will not notify you of potential cases of infringement. In a section on the USPTO website, a statement reads, “You are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.” To learn more about how you can effectively monitor your trademark, click here.

Protect

For any business or organization, defending a registered trademark is an essential part of preventing the dilution of their brand reputation. After your trademark has been registered with the USPTO, it’s essential that you spend time protecting your mark and enforcing your rights as the owner of a trademark. The monitoring strategies that you implement will help bring to your attention any potential cases of infringement that need to be addressed. It’s important to understand that failure to properly defend and protect your trademark against trademark infringers could diminish the strength of your trademark, and may even result in the cancellation of your registration.

Litigate

For any company or product, trademark disputes are bound to come up. When you notice even the most minor dispute, it will be up to you and your lawyer if you want to take any kind of legal action. If you send a cease-and-desist letter regarding the unauthorized use of your trademark and the infringement continues with no change, your attorney may recommend that you move into the litigation phase. If this does happen, it will be important to document all evidence of the infringement, your requests for the infringement to cease and desist, and any other information that pertains to your ownership of the trademark.

Renewal and Maintenance

The USPTO does not necessarily inform you that your trademark is about to expire, or of other maintenance requirements that may apply to your mark. Failure to monitor your registration status can result in the loss of your valuable trademark rights. To prevent this from happening, it can be helpful to hire an attorney who can help you keep up with any ongoing maintenance required in order to retain your rights as the owner of a trademark. For example, according to the USPTO, “you must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated.”

Conclusion

You’ve worked hard to register your trademark. In order to retain ownership of your trademark, follow the steps outlined above. If you still have questions or need any additional help, contact an attorney.

By: Xavier Morales, Esq.

Xavier Morales, Esq. is a licensed trademark attorney. Mr. Morales founded his trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Mr. Morales’ law practice emphasizes trademark registration, counseling and enforcement.

Read more about Mr Morales, and The Law Office of Xavier Morales here.